My Response to Prof. Menell Part 3-Supreme Court Disrepsects Legislative History in Kirtsaeng

Kirtsaeng’s Near-Contempt for 1960’s-Era Legislative Materials

This post continues my response to Prof. Menell’s contention that, based on the Supreme Court’s use of 1960’s-era legislative materials to construe the Copyright Act of 1976 (the “1976 Act”), it is appropriate to use such materials to help resolve the knotty question of whether merely making a copyrighted work available (for download or whatever) violates the distribution right. I had previouslycriticized Prof. Menell for relying on such materials when courts have generally limited the use of legislative materials to those generated by the Congress that enacted the legislation in question. For more background, see my first post in this series.

After reading the Supreme Court decisions cited by Prof. Menell, I came to the conclusion that most of them are irrelevant, referencing the 1960’s-era materials in passing or for context, but three of them—CCNV, Kirtsaeng and Stewart v. Abend—had something of relevance to say on the subject. Last time, I discussed the decision that most supports Prof. Menell’s, view, CCNV. This time, I’ll discuss the decision that most supports my view, Kirtsaeng.

At a minimum, CCNV seems to accept the possibility 1960’s era legislative materials could be used to construe the Copyright Act of 1976 (the “1976 Act”), even though (1) no one was arguing otherwise, and (2) the Court’s use of such materials was about 95% superfluous. By contrast, in Kirtsaeng v. John Wiley & Sons, Inc., the court is not only openly dismissive about the use of such materials but about legislative history in general.

Justice Breyer cares not for your legislative history.

Kirtsaeng’s Logical Knot

Kirtsaeng involved a logical knot. Kirtsaeng was a citizen of Thailand but lived in the U.S. Like a lot of people he was pretty annoyed with the prices of college textbooks, so he asked family members in Thailand to buy the same textbooks there, where they were much cheaper, and send them to him. Over time, this turned into a cottage industry, with family members buying larger and larger quantities of textbooks overseas and shipping them to the U.S. Consistent with current manufacturing practices, the books were made overseas, then exported to countries like Thailand and the U.S. Consistent with current pricing practices, the publishers would set prices proportionate each country’s standard of living, which was why the books were so much cheaper in Thailand than in the U.S.

One of those book publishers sued him to stop the practice. It is illegal to import into the U.S. goods that infringe U.S. copyrights. But Kirtsaeng argued that what he was doing was no different than if he bought the books in the U.S. and resold them here. The “first-sale” doctrine specifically allows you to re-sell copyrighted goods that you had lawfully purchased, notwithstanding the exclusive right to distribute those goods.

The publisher’s argument was that the “first-sale” doctrine, as codified by the 1976 Act, was limited to copies “lawfully made under this title [i.e., under the 1976 Act itself]”; and that a copy is not lawfully made under the 1976 Act unless it’s manufactured in the U.S. In other words, the phrase “lawfully made under this title” had a geographic dimension. The trial court was persuaded by this argument, and a divided Second Circuit affirmed.

The Supreme Court reversed, in a 6–3 opinion written by Justice Breyer. The Court held that “lawfully made under this title” was not a geographic limitation but exclusively a conceptual one. It was meant to ensure that the purchaser of an illegally made copy couldn’t legally distribute that copy.

Everything But Legislative History

Although a logical knot involving an ambiguous statutory phrase would seem to cry out for resort to legislative history, the Supreme Court goes out of its way to avoid legislative history for as long as it can.

Breyer starts his analysis with the actual language of § 109(a) and the context provided by other sections of the 1976 Act. “Lawful” implies a contrast with “unlawful.” But no one is suggesting that the books were somehow unlawfully made—after all, the plaintiff is the one that made them. It seems odd for Congress to ask this phrase to do double duty. Further, it’s not as though the 1976 doesn’t or can’t act upon overseas copies; it’s just that it usually chooses not to. For example, under § 104 (which governs unpublished foreign works), the 1976 Act can and does act upon copies made overseas.

Breyer then looked at the corresponding language from the Copyright Act of 1909 (the “1909 Act”), which read “the possession of which has been lawfully obtained.” To Breyer, this meant that the 1976 Congress probably meant the same thing when it wrote “lawfully made under this title,” or at least didn’t mean in include a geographical limitation.

Breyer then looked at other uses of the same phrase in the 1976 Act, pointing out some surprising consequences if you interpreted those uses to also have a geographic limitation. For example, you wouldn’t be able to publicly display in the U.S. a painting made in Canada.*

* To its credit, the publisher not only didn’t run away from these odd consequences but doubled down on them. It argued that, for example, it would be an infringement to publicly display a painting made in Canada, but no one would sue for such a minor violation. The Court responded that it would prefer not to rely on such forbearance.

Then Breyer looked at the common-law basis for the first-sale doctrine, because “when a statute covers an issue previously governed by the common law, courts presume that Congress intended to retain the substance of the common law.” Although the first-sale doctrine has a long and distinguished common-law pedigree (because it’s based on regular property law), there is nary a mention of geographical limitations in the common law. So there’s that.

Breyer then turns to arguments raised by industry groups, which were more or less terrified by the idea that copies made overseas were exceptions to the first-sale doctrine. Indeed, much of the global economy assumes, no matter where you buy a copyrighted item, you can re-sell and import with impunity. Not just books, but unexpected things like automobiles (which has copyrighted firmware, among other things).

Breyer finally turns to arguments raised by the publisher and the dissent. First, Breyer addresses a previous Supreme Court decision, Quality King, which had a similar fact pattern, but with a crucial distinction. In that case, the copies in question—the labels on shampoo—had been manufactured in the U.S., exported abroad (with the “sale” being deemed to have occurred in the U.S.), then re-imported. The Court held this wasn’t an infringement because, no matter how you sliced the “lawfully made under this title,” the goods had been “lawfully made.”

Raising up Legislative History Just to Knock it Down

Then, and only then, does Breyer address legislative history. He does so only because the publisher and the dissent rely heavily on it. Breyer feels he must address the argument*, but he does so with obvious distaste:

Second, Wiley and the dissent argue (to those who consider legislative history) that the Act’s legislative history supports their interpretation. But the historical events to which it points took place more than a decade before the enactment of the Act and, at best, are inconclusive.

(Italics in the original, bold added.)

* Remember what I said last time? The Court doesn’t like to say, simply, “Your argument is invalid,” even if the Court kind of thinks it is.

Breyer discusses the 1960’s-era legislative materials, including reports generated by the Copyright Office, and concludes they offer, at best, tantalizing clues about what the lobbyists and drafters (as opposed to actual members of Congress) were thinking. But, Breyer asks aloud, why bother with that stuff, when you have real legislative history?

But to ascertain the best reading of § 109(a), rather than dissecting the remarks of industry representatives concerning § 602 at congressional meetings held 10 years before the statute was enacted, see post, at 1380–1381, we would give greater weight to the congressional report accompanying § 109(a), written a decade later when Congress passed the new law.

(Bold added.) That reference to “post, at 1380–1381”? That’s a reference to the dissent’s lengthy reliance on 1960’s-era legislative materials.

So, let’s review. In Kirtsaeng, the Supreme Court bases its holding on roughly everything except legislative history, seemingly going out of its way to avoid it, even though the legal issue is precisely the sort that usually draws such analysis. It uses plain text of the statute, statutory context, context provided by the 1909 Act, context provided by industry practice (under which policy arguments masquerade), all before even mentioning legislative history.

And even when it gets to legislative history, it makes a show of tremendous reluctance and distaste, partly because it’s legislative history, but mostly because it’s the wrong legislative history—“But the historical events to which it points took place more than a decade before the enactment of the Act”—generated by the wrong people—“rather than dissecting the remarks of industry representatives concerning § 602 at congressional meetings held 10 years before the statute was enacted.” If you’re going to look at legislative history at all, you’re better off looking at the legislative history generated by people who actually had an opportunity to vote on the bill at the time the bill was enacted: “[W]e would give greater weight to the congressional report … written … when Congress passed the new law.”

This is, obviously, pretty much the argument I’ve made, and which I think is supported by lower-court precedent.

Kirtsaeng Is Stronger than CCNV but Still Not Definitive

The Court doesn’t quite just come out and reject the 1960’s-era legislative history, so you can’t say the Court has spoken definitively on the matter. Nothing quite prevents Justice Ginsberg, who wrote the dissent, from relying on 1960’s-era legislative history, the next time a copyright decision goes her way*, assuming it is actually helpful to her point of view (the 1960’s-era legislative history doesn’t consistently favor one “side” or the other of copyright law’s philosophical divides).

* Justice Ginsberg wrote the dissent. More important, she and Justice Breyer represent the opposing poles of the Supreme Court’s thinking on copyright matters (although in other matters they usually vote together). Justice Ginsberg, for example, wrote the majority opinions in Eldred, which upheld the most recent extension of the copyright term; in Golan, which upheld the removal of works from the public domain; and in Petrella, which found no laches bar in copyright actions, all over Justice Breyer’s strenuous dissents.

Justice Breyer, on the other hand, really can’t rely on 1960’s-era legislative history in the future. While he didn’t go so far as to affirmatively place his rejection into Kirtsaeng’s holding, he sure as heck disrespected it.

So far, we have one decision, CCNV, that supports the view (favored by Prof. Menell) that pre-enactment legislative history may be used to construe legislation, and one decision, Kirtsaeng, that spurns (and mocks and disrespects) such materials. On balance, Kirtsaeng’s maltreatment of the 1976 Act’s 1960’s-era legislative materials is more powerful than CCNV’s almost-superfluous use of those materials. CCNV merely accepts the materials (after it had already reached its holding) without questioning whether it is appropriate to do so. Kirtsaeng’s treatment of those materials, by contrast, was in the context of a implicit dispute about the propriety of using such materials: knowing that it had an option of relying on those materials, the Court pointedly refused to do so. You don’t need to be a fortunate teller to read these tea leaves.

Next time (in this series), I’ll discuss the two termination-rights decisions, Stewart v. Abend and Mills Music v. Snyder, which address the same issue and treat the 1960’s-era legislative materials differently.